DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-12 and 14-17 are pending. Claims 9, 11-12 and 14-16 are withdrawn from further consideration. Claim 13 has been cancelled.
Examiner’s Note
The arguments with respect to Siegel, as presented in the Remarks filed 29 June 2026, were found persuasive and a new grounds of rejection is presented below.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4, 7-8, 10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Singer (US 2012/0308486 A1) in view of Witteveen (US 2008/0305239 A1) as evidenced by PubChem (2-Phenylethyl Acetate, https://pubchem.ncbi.nlm.nih.gov/compound/Phenethyl-acetate).
Regarding claims 1 and 10, Singer discloses a flavoring or fragrance composition comprising compounds of Formula (I) and 2-phenylethyl acetate [0012], [0060], [0216], [0217] and [0239]. As evidenced by PubChem, phenethyl acetate and 2-phenylethyl acetate are synonyms for the same molecule which has the formula recited in instant claim 1 (bottom of p1).
Singer discloses the fragrance or flavor composition may be included in foodstuff and drinks [0272]. Singer discloses the drinks include nectars and fruit juices [0275]. Singer further discloses the drinks comprise fruit components, including lemon juice [0298-0299]. The lemon juice of Singer meets the claim limitation of citrus juice.
Singer does not disclose the concentration of the 2-phenethyl acetate in the final composition.
Witteveen, in the field of flavoring compositions, discloses flavoring compositions comprising 2-phenylethyl acetate [0021], [0027], [0029]. Witteveen discloses the flavor composition can be used in food products, including beverages (Abstract, [0001]).
Witteveen discloses the flavoring substance is included from 0.1-40 wt% in the total weight of the flavoring composition [0030]. Witteveen discloses the flavoring composition is added included from 0.01-30 wt% of the total weight of the food system [0055]. Therefore the 2-phenethyl acetate of Witteveen is included in the final food system from 0.00001 wt% up to 12 wt% (equivalent to 100 ppb-1.2 x 108 ppb) [Example calculation: (0.1% 2-phenethyl acetate in the flavoring composition * 0.01% of the flavoring composition in the food system)*100 =0.00001 wt% 2-phenethyl acetate in the food system].
The 0.00001 wt% up to 12 wt% (equivalent to 100 ppb-1.2 x 108 ppb) of 2-phenethyl acetate in the final food system of Witteveen overlaps with the claimed range of 1-500 ppb. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the lemon fruit juice of Singer comprising 2-phenethyl acetate with the beverage of Witteveen comprising 2-phenethyl acetate since both are drawn to the inclusion of 2-phenethyl acetate as a flavor molecule in beverages and Witteveen discloses 0.00001 wt% up to 12 wt% (equivalent to 100 ppb-1.2 x 108 ppb) of 2-phenethyl acetate is an appropriate inclusion rate for beverages.
As to the claim language “container packed” (claim 1) and “container-packed processed food or beverage” (claim 10), this language is deemed to be an intended use in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. Given that the product of Singer in view of Witteveen is identical to that of the presently claimed in terms of structure and composition, it meets the intended use of the claimed article.
Regarding claims 2, 3, 4 and 17, the claim language
“wherein the composition is a container packed seasoning composition” (claim 2)
“wherein the composition is a composition used to improve a flavor of the citrus juice: (claim 3)
“wherein the composition is a composition used to suppress a decrease in a terpene” (claim 4)
“wherein the composition is a composition used to improve a flavor of the citrus juice” (claim 17)
this language is deemed to be an intended use in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. Given that the product of Singer in view of Witteveen is identical to that of the presently claimed in terms of structure and composition, it meets the intended use of the claimed article.
Regarding claim 7, Singer discloses the non-alcoholic drinks include fruit components, such as fruit juices and sweeteners [0298] and [0299]. Singer discloses the sweeteners may be common sugars including sucrose [0300].
Regarding claim 8, Singer in view of Witteveen as evidenced by PubChem discloses the composition of claim 1 as discussed above. Singer discloses the non-alcoholic drinks include fruit components, such as fruit juices from lemons and sweeteners [0298] and [0299]. Singer discloses the sweeteners may be common sugars including sucrose [0300]. Singer’s sucrose included in the non-alcoholic beverage is considered to meet the claim limitation of an ingredient.
As to the claim language “a processed food or beverage”, this language is deemed to be an intended use in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. Given that the product of Singer in view of Witteveen is identical to that of the presently claimed in terms of structure and composition, it meets the intended use of the claimed article.
Additionally, Singer discloses the beverage can be a fruit or vegetable juice preparation, which meets the claim limitation of a processed beverage [0275].
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Singer in view of Witteveen as evidenced by PubChem as applied to claim 1 above, and further evidenced by New Directions Aromatics (All About D-Limonene, 2019, https://www.newdirectionsaromatics.com/blog/all-about-d-limonene).
Regarding claims 5 and 6, Singer discloses the fruit can be lemon [0299]. As evidenced by New Directions Aromatics, lemon contains the naturally occurring terpene D-Limonene (p1, para. 1).
Response to Arguments
Applicant's arguments filed 29 June 2026 have been fully considered. As noted above, with respect to the previous rejection over Siegel the remarks are persuasive. (Remarks pp2-4) and new grounds of rejection have been presented.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/C.L.G./Examiner, Art Unit 1793
/Michele L Jacobson/Primary Examiner, Art Unit 1793
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